Optis Cellular Technology LLC v Apple Retail UK Ltd & Ors

In managing complex patent proceedings, the court may schedule a later trial of recently pleaded issues where doing so accords with the overriding objective and does not unfairly prejudice either party. The issues must be identified with sufficient clarity, including matters that will and will not be decided. A properly arguable contention that a party’s refusal to abide by a finding as to a fair, reasonable and non-discriminatory licence may have adverse consequences can justify listing that issue for determination, even though the court cannot decide its merits at a case-management hearing.

This was a case-management decision in patent proceedings between Optis Cellular Technology LLC and related claimants and Apple entities. The court was asked to determine how issues should be scheduled for a further trial, known as Trial F, in the context of wider disputes concerning patent validity, infringement, licensing and relief.

Mr Justice Birss considered the proposed issues, the development of the pleadings, possible prejudice, preparation time, prospects of avoiding further proceedings, and the effect on any appeal. He also considered whether the pleaded issue concerning an unwilling licensee and the consequences of refusing to abide by a FRAND determination was sufficiently arguable and suitable for inclusion.

1. Order made. The matter was directed to be tried in a five-day trial between 1 June and the end of the relevant term in 2021. A further case-management hearing was listed for the first week of September 2020 to resolve any remaining dispute about the precise scope of Trial F.
2. The court could make the scheduling direction under the overriding objective where the proposed issues were sufficiently clear at that stage, notwithstanding that their final terms required later clarification. The order should identify both the issues to be decided and those not in issue at the hearing.
3. The proposed trial was to address the pleaded unwilling-licensee question, specified defence points, and ownership of the patents and the effect of the MSA. The interim-licence issue was not included because it had not made sense to determine it at the earlier trial.
4. The case-management decision did not determine the merits of Apple’s alleged refusal to abide by a FRAND finding or the consequences for Optis’s entitlement to an injunction. However, the contention that such refusal might have adverse consequences was sufficiently properly arguable to justify determining the issue at the proposed stage.
5. The court was satisfied that the direction was timely, would not prejudice either party, was compatible with efficient appellate resolution, and might avoid further proceedings by promoting settlement. The parties were expected to prepare properly and fairly despite the additional strain imposed by the revised timetable.

Not stated in the judgment.